ADVOCATES:Sarah E. Harrington - Assistant to the Solicitor General, Department of Justice, for the United States as amicus curiae supporting the respondentPaul W. Hughes - for the petitionerCarlo F. Van den Bosch - for the respondent

Facts of the case

In the spring of 1994, Hana Bank, a Korean entity, began to extend its services to the United States under the name Hana Overseas Korean Club. In advertisements distributed during the summer of 1994, Hana Bank included the name "Hana Overseas Korean Club" in English as well as "Hana Bank" in Korean. The advertisements also included Hana Bank's logo, known as the "dancing man." A second, distinct entity, Hana Financial, Inc. (HFI) was founded in California in the fall of 1994. In 1996, HFI obtained a federal trademark for their logo, a pyramid, with the words "Hana Financial" for use in financial services. Hana Bank officials were aware of HFI's use of the name Hana Financial but did not see the need to take any action because the entities did not directly compete with each other.

In 2007, HFI filed a complaint against Hana Bank alleging trademark infringement. The district court jury found that Hana Bank had used the "Hana Bank" trademark in the United States continuously since before HFI began using the "Hana Financial" trademark in 1995 and that Hana Bank's trademark could be "tacked" to their 1994 advertisements, which included a similar, but distinct use of the phrase "Hana Bank." HFI appealed, claiming that the determination of whether a trademark may be "tacked" to a prior mark is a question of law that must be determined by the court, not a question of fact that may be decided by a jury. The U.S. Court of Appeals for the affirmed the jury's decision.

Question

Is the determination of whether a trademark may be tacked to an earlier mark a question of law which a court must decide, or a question of fact for the jury?

John G. Roberts, Jr.:

Sonia Sotomayor:

This case comes to us on a writ of certiorari to Court of Appeals for the Ninth Circuit.

It concerns the doctrine of trademark tacking, which lower courts have developed so as to permit trademark users to make certain modifications to their marks while, in limited circumstances, retaining their priority positions.

Priority is important, because rights in a trademark are determined by the date of the mark's first use in commerce.

The lower courts have agreed that tacking is available when the original and revised marks are legal equivalents, which means that they create the same continuing commercial impression.

We granted certiorari to resolve the Circuit split about whether this determination should be made by a judge or jury.

Tests that ask how an ordinary person or community would act or understand something are often assigned to juries in many areas of the law.

This is true even where the test requires the application of a legal standard.

Here the test is about a mark's commercial impression, and that impression is viewed through the eyes of a consumer.

Because determining an ordinary consumer's impression falls easily within the category of things that juries do best, we hold that a jury should decide whether two marks may be tacked.

Of course, if the facts warrant it, a judge may decide a tacking question at summary judgment or on the motion for judgment as a matter of law.

Judges may also decide tacking questions in bench trials.

We hold only that when a jury trial has been requested and when the facts do not warrant summary judgment or judgment as a matter of law, the question of tacking must be decided by a jury.